Self-filing patents can cause missed opportunities

Blazing own trail by self-filing patents can cause missed
opportunities

By Craig Tolson

A review of the numbers of
local patent filings made in New Zealand and who was making
those applications revealed the rather startling statistic
that a large proportion of local patent filings were not
made through specialist IP firms, instead they appeared to
be self filed.

To any professional working in the
Intellectual Property field this is a frightening statistic,
and not just from the perspective of their own business. It
is easy to see why someone might make the decision to
self-file. Engaging a patent attorney is perceived as an
expensive undertaking, especially for what is likely to be
an unknown and unproven product or process.

However,
the value that a patent attorney adds is the knowledge of
the mistakes that have in the past destroyed the rights of
prospective patentees as well as an intimate knowledge of
the requirements for preparing robust applications that are
tailored to provide the broadest monopoly that can
reasonably be afforded to the applicant.

Obtaining a valid
patent is not intended to be easy. The rights afforded by a
granted patent can be an extremely valuable right if used to
their full extent. For this reason the patent office will
challenge applicants to prove their entitlement to what they
are claiming.

This task can be likened to scaling a
mountain. You can use the help of a guide who can navigate
you around most obstacles and therefore provide you with the
greatest chance of success; you could rely on the experience
and the accounts of other non-experts and hope for the best;
or you can blaze your own trail – and probably fall into
every crevasse along the way.

There are significant
shortcomings that we see all the time when ‘rescuing’
self-filed applications. The most common issues are
excessively narrow claims, a lack of fair basis, the missing
of important deadlines and use of the wrong form of
intellectual property protection for a particular product or
process.

For example, recently a very excited client
called us about their product which was starting to make
traction in the market and was selling strongly. The client
had self-filed a design registration, protecting the look of
their product. We looked into the product and confirmed that
there were no patentable features and he had chosen the
right form of protection.

He then advised that he wanted
to engage us to file corresponding design registration in
the countries where he wanted to sell his product, and
that’s where the trouble started.

The client forwarded
us the details of his registered New Zealand Design that had
been filed around 14 months earlier, and confirmed that he
had published drawings of his product online almost
immediately after filing his application.

Unfortunately we
had to advise him that convention applications needed to be
filed within six months of his New Zealand application in
order for them to be afforded the same filing date, and that
because he’d published the drawings online he lost novelty
in his product and unfortunately any subsequent design
registration would be invalid.

Not surprisingly, upset
does not justify how this news was taken.

The moral of
the story is speak to a patent attorney before you make the
decision to self-file. If the cost of engaging a patent
attorney is too great then it may be better to sit on your
idea until the cost is affordable.

As a final comment on
self-filing, if your intention is to sell rights to your new
product or process, you can bet that any potential licensee
or purchaser will undertake a due diligence analysis of your
IP. If they find it wanting, such as having narrow claims or
a lack of fair basis, they are unlikely to pay what you
want.

This article was written by Craig Tolson,
Technical Advisor, James & Wells. Based in our Christchurch
Office, Craig has a background in electrical engineering and
specialises in the prosecution of electrical, mechanical and
software patents.

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